Appeal No. 1998-0976
Application 08/379,722
is constructed of a nonconductive material (felt, paper or
cardboard) and thus effectively blocks the radial transfer of
charge from the rubber blanket 5. Appellants argue that,
accordingly, Köbler is not properly combinable with DeMoore to
support an obviousness rejection of the pending claims.
The Federal Circuit states that "[t]he mere fact
that the prior art may be modified in the manner suggested by
the Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992)(citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984)). It is further
established that such a suggestion may "come from the nature
of a problem to be solved, leading inventors to look to
references relating to
possible solutions to that problem." Pro-Mold & Tool Co. v.
Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d
1626, 1630 (Fed. Cir. 1996)(citing In re Rinehart, 531 F.2d
1048, 1054, 189 USPQ 143, 149 (CCPA 1976)(considering the
6
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